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Intellectual Property Law

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Tuesday, November 29, 2011

On September 16, 2011, after years of negotiation and delay, President Obama signed into law the "Leahy-Smith America Invents Act" (AIA).  The AIA makes significant changes to the U. S. patent system. The stated major purposes of the AIA are to: (1) better harmonize U. S. patent laws with those of other countries and (2) streamline patent office procedures. There are several facets to the AIA and, with them, implementations dates ranging from September 16, 2011 through March 16, 2013.


Significant among the many changes to the patent laws are the following provisions:


"First to invent" system to a  “first-to-file” system. This change has perhaps gotten the most attention and, when implemented, will have a significant impact on inventors wishing to secure their rights. Prior to enactment of the AIA, the United States had a “first-to-invent” system.  This meant that deciding whether, during a proscribed time frame, an invention was new or not obvious at the time the invention was conceived, not at the time the application was filed. Most other countries have patent systems wherein the application filing date is the determining factor for inventorship. The AIA changes the U. S. system to be more in tune with the rest of the world in that it now provides that applications will be examined against prior art dated before an application’s filing date (The AIA does, however, provide some limited exceptions) not its conception date.


Post-grant review and inter partes review. From the patent legal community's perspective, perhaps the most anticipated aspect of the AIA creates proceedings in the Patent Office to challenge issued patents. There are two separate proceedings created by the AIA: (1) an “inter partes” review and (2) a “post-grant” review. The “inter partes” review permits allegations of invalidity over prior art. The “post-grant” review permits allegations of invalidity on any ground in the statute, and must be filed within nine months of the patent’s issuance. The rules for these proceedings are not yet set and must be promulgated by the Patent Office in the coming months.


Supplemental examination. The AIA provides a procedure for supplemental examination of a patent by its owner.  This is not a re-examination of the patent but instead can be used to “cure” what might be inequitable conduct in the original prosecution, if the previously unconsidered or incorrect information was considered or corrected in the supplemental examination. There is an additional part of this section of the AIA that also provides that if the Patent Office discovers a substantial new question of patentability during a supplemental examination, a re-examination will be ordered using the current re-examination procedure.

Prosecution by an assignee. Prior to the AIA, a patent was issued in the inventor's name.  Many times the application and resulting patent were filed on behalf of an inventor by an assignee, frequently an employer. Once a proper assignment was made, the assignee could prosecute the application through the Patent Office without necessarily involving the inventor.  The AIA still requires the original inventor be identified but now provides that if the inventor is required to assign the invention to a third party, the assignment can authorize the third party to take control the application and have it issue in the assignee’s name.


Prior use defense based on personal use. The AIA provides an expanded “prior use” defense for a business using a process or machine as part of a process for more than one year prior to the effective filing date of a patent that would cover the process or machine. The defense is personal to the user. It can only be transferred with the business to which the process or machine relates. The prior use defense can be used in situations in which a non-public first use cannot be used to invalidate a patent.


Best mode defense eliminated. Prior to the AIA, an applicant was required to disclose, “the best mode contemplated by the inventor of carrying out his invention.”   Failure to do so could result in a defective patent. The AIA eliminates this requirement and with it the defense provided by it.  There are some issues with the wording and how it impacts or is impacted by other sections of the patent act.  Accordingly, its significance is currently uncertain.

 Virtual patent marking.   Pre-AIA, Patent damages did not begin to accrue until the patentee accused the infringer of infringement.  This was traditionally done by either: (1) giving constructive notice by marking a patented product with “pat.” or “patent” and the patent number or (2) with a written document informing the alleged infringer of the patent number and an accusation of infringement.  The difficulty arose when a patent expired and a patent owner did not change printing plates.  The AIA provides for virtual marking wherein the product may be marked with “pat.” or “patent” and a free-to-access to a web address that identifies the product and its patent numbers.   

False marking.  Pre-AIA, anyone could sue a patentee for false marking, which is the use of an erroneous patent number or n expired patent's number.   The AIA provides that now only the United States or someone with a competitive injury can sue a patentee for false marking.  Moreover, the AIA clarifies that marking a product with an expired patent is never a violation of the false marking statute.


Patent Term Extension: The AIA provides clarification of the patent term extension rules for FDA commercial marketing or use permits.


Human Organisms:  The AIA provides that “no patent may issue on a claim directed to or encompassing a human organism.” This provision applies to all any pending patent applications.  This section of the AIA will have a profound effect on the life sciences industry.


Tax Strategies: A new provision in the AIA explicitly excludes certain inventions from patent protection. The legislation states that any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of invention or the filing of a patent application, “shall be deemed insufficient to differentiate a claimed invention from the prior art.” AIA, Section 14. The provision expressly excludes tax preparation inventions. All pending patent applications and all patents issued on or after the date of enactment are subject to AIA Section 14.


Micro entity filing fees. The AIA creates a “micro entity” fee provision for, presumably, independent inventors.  The AIA defines a “micro entity” as any small entity that qualifies as a small entity under the patent act, has filed no more than four applications, has not or will not assigned it to a non-qualifying person or entity, and has an income that is less than three times the median household income of the preceding year. Micro entities are charged fees equal to 25% of the then current large entity fee.


These are but some of the changes brought by the AIA.  Others that could prove equally important were also part of the new law. Many of these provisions will take effect within the next 18 months, although some took effect as of September 16, 2011.  Therefore it is time to consider how these sweeping changes to the U. S. patent system will affect your innovation strategies and business practices. If you have questions regarding how best to protect your intellectual property under the America Invents Act, contact Wiemelt Knechtel at 602-910-4250 or 312-372-7664 or by email at rknechtel@wiemeltlaw.com or mark@wiemeltlaw.com.

11:37 am cst 

Tuesday, November 1, 2011

Name Change and New Attorney Robert L. Knechtel
I am pleased to announce that Robert L. Knechtel, M.D., J.D. will be re-joining my firm, beginning November 1, 2011.  With over 20 years of experience, Robb's practice will continue to cover all aspects of intellectual property law.  Robb will be located in and running the Phoenix/Scottsdale, Arizona office.  In addition, the Law Offices of Mark E. Wiemelt, P.C. will begin doing business as “Wiemelt Knechtel” from its IL, MI and AZ locations.
1:45 pm cdt 

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